Ex Parte Schulze et al

Patent Trial and Appeal BoardFeb 27, 2019

14113017 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/113,017 01/06/2014 Volker Schulze 20872 7590 03/01/2019 MORRISON & FOERSTER LLP 425 MARKET STREET SAN FRANCISCO, CA 94105-2482 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 777052001700 9660 EXAMINER BARSKY, JARED ART UNIT PAPER NUMBER 1628 NOTIFICATION DATE DELIVERY MODE 03/01/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PatentDocket@mofo.com pair_mofo@firsttofile.com EOfficeSF@mofo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VOLKER SCHULZE, DIRK KOSEMUND, ANTJE MARGRET WENGNER, GERHARD SIEMEISTER, DETLEF STOCKIGT, PHILIP LIENAU, HARTMUT SCHIROK, and HANS BRIEM 1 Appeal2017-005634 Application 14/113,017 Technology Center 1600 Before TA WEN CHANG, JOHN E. SCHNEIDER, and TIMOTHY J. MAJORS, Administrative Patent Judges. CHANG, Administrative Patent Judge. 1 Appellants identify the Real Party in Interest as Bayer Intellectual Property GmbH. (Appeal Br. 3.) 1 Appeal2017-005634 Application 14/113,017 DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) involving claims to a compound of general formula (I), (I) which have been rejected for nonstatutory obviousness-type double patenting. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. STATEMENT OF THE CASE According to the Specification, the present invention relates to chemical compounds that inhibit Mps-1 (Monopolar Spindle 1) kinase, which plays a key role in ensuring proper chromosome segregation during cell division. (Spec. 1: 12-17.) Further according to the Specification, "inhibition of Mps-1 kinase ... represents a new approach for the treatment of ... disorders associated with uncontrolled cellular proliferation." (Id. at 2:17-22.) Claims 1-5, 9, 10, 14, and 15 are on appeal. Claim 1 is illustrative and reproduced below: 2 Appeal2017-005634 Application 14/113,017 1. A compound of general formula (I) : (I) in which: R1 represents a phenyl or a pyridyl group - which is substituted, one or more times, identically or differently, with a substituent selected from: R6-(C1-C6-alkoxy)-, R6-0-, -C(=O)R6, -C(=O)O-R6, - N(H)C(=O)R6, -N(H)C(=O)NR6R7, -NR6R7, - C(=O)N(H)R6, -C(=O)NR6R7, R6-S-, R6-S(=0)2-, - N(H)S(=0)2R6, -S(=0)2N(H)R6; and - which is optionally substituted, one or more times, identically or differently, with a substituent selected from: halo-, hydroxy-, nitro-, C1-C6-alkyl-, C1-C6-alkoxy-, hydroxy-C1-C6-alkyl-, -N(H)C(=O)R8 , - N(H)C(=O)NR8R7, -C(=O)N(H)R8, -N(H)S(=0)2R8; R2 represents a group; wherein * indicates the point of attachment of said group with the rest of the molecule; 3 Appeal2017-005634 Application 14/113,017 Qi represents a group selected from: N, CH, C-(Ci-C6- alkyl), C-(Ci-C6-alkoxy), C-halo; Q2 represents a group selected from: N, CH, CR5\ Q3 represents a group selected from: N, CH, CR5\ R5a represents a group selected from: halo-, nitro-, Ci-C6-alkyl-, halo-Ci-C6-alkyl-, Ci-C6- alkoxy-, halo-Ci-C6-alkoxy-, hydroxy-Ci-C6-alkyl-, Ci- C6-alkoxy-C i -C6-alkyl-, halo-Ci -C6-alkoxy-C i -C6-alkyl-, R8-(Ci-C6-alkoxy)-, R8-0-, -NR8R7, R8-S-, R8-S(=O)-, R8-S(=0)2-, (C3-C6-cycloalkyl)-(CH2)n-O-; R5b represents a group selected from: halo-, hydroxy-, cyano-, nitro-, Ci-C6-alkyl-, halo-Ci-C6- alkyl-, Ci-C6-alkoxy-, halo-Ci-C6-alkoxy-, hydroxy-Ci- C6-alkyl-, Ci -C6-alkoxy-C i -C6-alkyl-, halo-Ci -C6-alkoxy- Ci -C6-alkyl-, R8-(Ci-C6-alkyl)-, R8- (CH2)n(CHOH)(CH2)m-, R8-(Ci -C6-alkoxy)-, R8- (CH2)n(CHOH)(CH2)p-O-, R8-(Ci-C6-alkoxy-Ci-C6- alkyl)-, R 8-( Ci -C6-alkoxy-C i -C6-alkyl)-O-, -0-( CH2)n- C( =O )NR 8R7, R8-0-, -C(=O)R8, -C(=O)O-R8 , -OC(=O)- R8, -N(H)C(=O)R8 , -N(R7)C(=O)R8 , -N(H)C(=O)NR8R7 , -N(R7)C(=O)NR8R7, -NR8R7 , -NR7R7 , -C(=O)N(H)R8, -C(=O)NR8R7 , R8-S-, R8-S(=O)-, R8-S(=0)2-, - N(H)S(=O)R8 , -N(R7)S(=O)R8, -S(=O)N(H)R8 , - S(=O)NR8R7, -N(H)S(=0)2R8, -N(R7)S(=0)2R8, - S(=0)2N(H)R8 , -S(=0)2NR8R7, -S(=O)(=NR8)R7, - S(=O)(=NR7)R8 , -N=S(=O)(R8)R7; R3 represents a hydrogen atom, a halogen atom, a hydroxy-, amino-, cyano-, nitro-, Ci-C4-alkyl-, halo-Ci- C4-alkyl-, Ci- C4-alkoxy-, halo-Ci- C4-alkoxy-, hydroxy-Ci-C4- alkyl-, Ci-C4-alkoxy-Ci-C4-alkyl-, halo-Ci-C4-alkoxy-Ci- C4-alkyl-, C2-C6-alkenyl-, C2-C6-alkynyl-, halo-C2-C6- alkenyl-, halo-C2-C6-alkynyl-, C3-C6-cycloalkyl-, or halo C3-C6-cycloalkyl- group; 4 Appeal2017-005634 Application 14/113,017 R4 represents a hydrogen atom, a halogen atom, a hydroxy-, amino-, cyano-, nitro-, C1-C4-alkyl-, halo-C1-C4-alkyl-, C1-C4-alkoxy-, halo-C1-C4-alkoxy-, hydroxy-C1-C4- alkyl-, C1-C4-alkoxy-C1-C4-alkyl-, halo-C1-C4-alkoxy-C1- C4-alkyl-, C2-C6-alkenyl-, C2-C6-alkynyl-, halo-C2-C6- alkenyl-, halo-C2-C6-alkynyl-, C3-C6- cycloalkyl-, or halo-C3-C6 cycloalkyl- group; R5 represents a hydrogen atom; R6 represents a group selected from C3-C6-cycloalkyl-, 3- to IO-membered heterocyclyl-, aryl-, heteroaryl-, -(CH2)q- (C3- C6-cycloalkyl), -(CH2)q-(3- to IO-membered heterocyclyl), -(CH2)q-aryl, or -(CH2)q-heteroaryl, wherein said group being optionally substituted, one or more times, identically or differently, with a substituent selected from: halo-, hydroxy-, cyano-, nitro-, C1-C6-alkyl-, halo-C1-C6- alkyl-, C1-C6-alkoxy-, halo-C1-C6-alkoxy-, hydroxy-C1- C6-alkyl-, C1-C6-alkoxy-C1 -C6-alkyl-, halo-C1-C6- alkoxy-C1-C6-alkyl-, R8-(C1-C6-alkyl)-, R8- (CH2)n(CHOH)(CH2)m-, R8-(C1-C6-alkoxy)-, R8- (CH2)n(CHOH)(CH2)p-O-, R8-(C1-C6-alkoxy-C1-C6- alkyl)-, R8-(C1-C6-alkoxy-C1-C6-alkyl)-O-, aryl-, R8-0-, -C(=O)R8 , -C(=O)O-R8, -OC(=O)-R8, -N(H)C(=O)R8, -N(R7)C(=O)R8, -N(H)C(=O)NR8R7 , -N(R7)C(=O)NR8R7 , -NR8R7, -C(=O)N(H)R8, -C(=O)NR8R7 , R8-S-, R8-S(=O)-, R8-S(=0)2-, -N(H)S(=O)R8, -N(R7)S(=O)R8 , -S(=O)N(H)R8 , -S(=O)NR8R7, -N(H)S(=0)2R8 , -N(R7)S(=0)2R8 , -S(=0)2N(H)R8 , -S(=0)2NR8R7, -S(=O)(=NR8)R7, - S(=O)(=NR7)R8 , -N=S(=O)(R8)R7; R7 represents a hydrogen atom, a C1-C6-alkyl- or a C3- C6- cycloalkyl- group; R8 represents a hydrogen atom or a C1-C6-alkyl- or C3- C6- cycloalkyl- group, wherein said C1-C6-alkyl- or C3- C6- cycloalkyl- group is optionally substituted, one or more 5 Appeal2017-005634 Application 14/113,017 times, identically or differently, with a substituent selected from: halo-, hydroxy-, -NHR7, -NR7R7, -N(C1- C3-alkyl)-C(=O)R7, -N(C1-C3-alkyl)C(=O)OR7, C1-C3- alkyl-, R7-S(=0)2-, C1-C3-alkoxy-, halo-C1-C3-alkoxy-; n, m, p, and represent, independently from each other, an integer of 0, 1, 2 or 3; q represents an integer of 0, 1, 2 or 3; or a stereoisomer, a tautomer, an N-oxide, a hydrate, a solvate, or a salt thereof, or a mixture of same. (Appeal Br. 12-15 (Claims App.).) In response to a Restriction Requirement, Appellants provisionally elected the species of Example 01.32, N-[ 4-(2-{[2-ethoxy-4- (methylsulfonyl)phenyl]amino} [1, 2,4]triazolo[l, 5-a]pyridin-6-yl)phenyl]- 2-( 4-fluorophenyl)acetamide, reproduced below: ,.)~9-0-~ l'\C ............ O~ 4 y ,, o=s.-CH .. II ,, 0 (Response to Restriction Requirement 1-2 (Jan. 6, 2014) ("Restriction Response"); Spec. 165:14.) 6 Appeal2017-005634 Application 14/113,017 The Examiner rejects claims 1-5, 9, 10, 14, and 15 for nonstatutory obviousness-type double patenting over claims 1-5 of U.S. Patent No. 9,676,766 B2. 2 (Ans. 4.) The Examiner rejects claims 1-5, 9, 10, 14, and 15 for nonstatutory obviousness-type double patenting over claims 1-5 of U.S. Patent No. 8,551,980. 3 (Ans. 6.) I. Issue The Examiner rejects claims 1-5, 9, 10, 14, and 15 for nonstatutory obviousness-type double patenting over claims 1-5 of the '766 patent. The Examiner states that, [ a ]lthough the claims [ on appeal and claims 1-5 of the '766 patent] are not identical, they are not patentably distinct from each other because the ['766 patent] claims the elected species and other overlapping species of the instant claims. Specifically, the ['7 66] patent claims the elected species, wherein: RI is N(R7)C(=O)-R6, R7 is hydrogen, wherein R6 is (CH2)q-aryl substituted with a halo (i.e., fluorine); and R2 is aryl substituted with R8- S02 and R8-0, wherein R8 is C 1-C6 alkyl. As such, the claims of the ['766 patent] include compounds that are instantly claimed. (Ans. 4 (emphasis omitted).) (Id. at 4 (emphasis omitted).) 2 The Examiner entered a provisional rejection based on U.S. Application No. 13/512,701. (Ans. 6.) However, that application has issued as the '766 patent, so the rejection is no longer provisional. We note that claims 1-5 of the '701 application were amended several times prior to the issuance of '766 patent. Our discussion is based on the claims as issued. 3 In the Answer, the Examiner withdrew the double patenting rejection over Application No. 14/362,836. (Ans. 3.) 7 Appeal2017-005634 Application 14/113,017 Appellants contend that there is no evidence on the record that the skilled artisan would make the selections and modifications to the compounds of the '701 application (now the '766 patent) to arrive at the claimed compounds. (Appeal Br. 10-11.) Appellants also contend that the subject matter of the claims exhibits unexpected results. (Id. at 11.) We limit our consideration on the merits to the elected species. See Ex parte Ohsaka, 2 U.S.P.Q.2d 1460, 1461 (B.P.A.I. 1987). The issue with respect to this rejection is whether a preponderance of the evidence of record supports the Examiner's conclusion that the elected species, N-[4-(2-{[2- ethoxy-4-(methylsulfonyl)phenyl]amino} [1, 2,4]triazolo[l, 5-a]pyridin-6- yl)phenyl]-2-(4-fluorophenyl)acetamide, is an obvious variant of the compounds claimed in claims 1-5 of the '766 patent and, if so, whether Appellants have provided evidence of unexpected results that, when considered together with evidence of obviousness, shows the claims to be nonobvious. Analysis There are two steps in an obviousness-type double patenting analysis: First, we construe the claims of the earlier patent and the claims on appeal and determine the differences between the two. Second, we determine whether the differences render the claims "patentably distinct." UCB, Inc. v. Accord Healthcare, Inc., 890 F.3d 1313, 1323 (Fed. Cir. 2018). "The second part of this analysis is analogous to the obviousness inquiry under 35 U.S.C. Â§ 103 in the sense that if an earlier claim renders obvious or anticipates a later claim, the later claim is not patentably distinct and is thus invalid for obviousness-type double patenting." Id. However, unlike with statutory obviousness, the double patenting inquiry in chemical cases is not 8 Appeal2017-005634 Application 14/113,017 "whether a person of ordinary skill in the art would select the earlier compound as a lead compound, but rather whether the later compound would have been an obvious or anticipated modification of the earlier compound." Id. Claims 1-5, 9, and 10 In this case, claim 1 on appeal and claim 4 of the '7 66 patent, which appears to have the greatest overlap with instant claim 1, 4 have the same base structure (Appeal Br. (Claims App.); '766 patent 83:60-65 (claim 1), 89:1 (claim 4 depending from claim 1 ). ) The primary difference between claim 1 and claim 4 of the '766 patent lies in the R2 group. 5 In particular, while the 4 We note that claim 5 of the '766 patent recites a list of specific compounds. ('766 patent 89:62-91:34.) The Examiner has not relied on any of the specifically recited compounds to assert that the claims on appeal are not patentably distinct from the reference claims. We decline to determine in the first instance whether the claims on appeal may be rejected on double patenting ground on the basis that they are not patentably distinct from one or more of the compounds recited in claim 5. 5 The R1 groups of claim 1 and the reference claim are largely identical, except that ( 1) the R 1 group of claim 1 may be phenyl or a pyridyl group, whereas the R1 group of the reference claim is a phenyl group; and (2) for certain substituents for the R1 group comprising R6 and/or R7, the reference claim explicitly provides that NR6R7 together may form an optionally substituted 3- to 10- member heterocyclyl group while claim 1 provides for a greater number of permissible R6 groups. The R3, R4, and R5 groups of the reference claim are hydrogen atoms and a subset of the permitted R3, R4, and R5 groups of claim 1. 9 Appeal2017-005634 Application 14/113,017 reference claim allows R2 to be a phenyl group optionally substituted with an enumerated list of substituent groups, claim 1 requires the R2 group to be substituted at the 2 and 4 position of the aromatic ring, as illustrated below: * substituted at the 2 position "a R~l0as J I.. Q..:: hQ'' _____ Y_ R5t; substituted at the 4 position group; (Appeal Br. 12-13 (Claims App., annotations added).) The figure above depicts the permitted structures for the R2 group for instant claim 1, where * indicates the point of attachment of the R2 group to the rest of the molecule; Q2 and Q3 represents a group selected from N, CH, CR5\ and R5a and R5b represent a group of enumerated substituents and may not be hydrogen. 6 More specifically, with respect to the elected compound N-[ 4-(2-{[2- ethoxy-4-(methylsulfonyl)phenyl]amino} [1, 2,4]triazolo[l, 5-a]pyridin-6- yl)phenyl]-2-(4-fluorophenyl)acetamide, the compound is a species of the genus described in the reference claim, wherein R1 is a phenyl group substituted with N(H)C(=O)-R6, where R6 is (CH2)q-aryl substituted with a halo (i.e., fluorine) and q is 1; and R2 is aryl substituted with R8-S02 and C1- C6 alkoxy, where R8 is C1-C6 alkyl. 6 We also note that, while the permissible substituents of the R2 group of the reference claim is a subset of R5b of claim 1, the permitted substituents at the 6 position in the aromatic ring of claim 1 (i.e., Q1) is a subset of the permissible substituents of the R2 group of the reference claim, and the permissible R5a groups for instant claim 1 overlaps but do not appear to be identical with the permissible substituents of the R2 group of the reference claim. 10 Appeal2017-005634 Application 14/113,017 On balance, we agree with Appellants that the Examiner has not established that the elected species of claim 1 would have been obvious to an ordinarilv skilled artisan at the time the invention was made . .; \Ve are cognizant that non-statutory obviousness type double- patenting rejections are different than statutory obviousness rejections because "double patenting is not 'concerned with what one skilled in the mi would be aware [of] from reading the claims but with what inventions the claims define," and because in double-patenting rejections "the same party claims a genus in an earlier patent and then claims a species in a later patent" while in statutory obviousness rejections "the prior art merely disclose5; a genus and a later patent claims a species.'' Eli Lil(y & Co. v. Barr Labs., Inc., 222 F.3d 973, 986 (Fed. Cir. 2000). Likewise, the doctrine of double patenting has the particular purpose of "prevent[ing] a patentee from obtaining a time-wise extension of [a] patent for the same invention or an obvious modification thereat:" which is generally not the case in a statutory obviousness rejection. In re Basel! Poliolefine Italia S.P.A., 547 F.3d 1371, 1375 (Fed. Cir. 2008) (internal quotation marks and citation omitted). Nevertheless, "obviousness is not demonstrated merely by showing that an earlier expiring patent dominates a later expiring patent," and "[i]t is well-settled that a narrow species can be non-obvious and patent-eligible despite a patent on its genus." Abbvie Inc. v. Mathilda and Terence Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 1379 (Fed. Cir. 2014); cf UCB, 890 F.3d at 1327 (disagreeing with the proposition that "presumption of an enabled genus of compounds precludes the district court from finding that there was no reasonable expectation of success of creating a species falling within that genus" and explaining that "such a result would have a 11 Appeal2017-005634 Application 14/113,017 chilling effect on genus claiming in the chemical arts as there would be double patenting in all chemical compound cases where a parent patent claims a genus"). In this case, the Examiner bases the rejection solely on the findings that the reference claims encompass the elected species and that "the claimed genus and the genus of the ['766 patent claims] include hundreds or even thousands of identical compounds." (Ans. 4, 7-9.) Thus, the Examiner appears to have only considered how the elected species and the instant claims are similar to the reference claims, without considering how the elected species and the instant claims differ from the reference claims. Neither did the Examiner construe the reference claims to support the rejection. For instance, the Examiner did not support the prima facie case by pointing to particular species disclosed in the '766 patent as encompassed by the reference claims to explain why the elected species and/or the claims on appeal are not patentably distinct from the reference claims. Accordingly, and limiting our consideration of the merits to the elected species, N-[ 4-(2- { [2-ethoxy-4-( methylsulfonyl)phenyl]amino} [ 1, 2,4 ]triazolo[l, 5-a ]pyridin-6-yl)phenyl]-2-( 4-fluorophenyl)acetamide, we reverse the Examiner's rejection of claim 1 over claims 1-5 of the '766 patent on the ground of nonstatutory obviousness-type double patenting. We likewise reject claims 2-5, 9, and 10, which depend from claim 1 or recite pharmaceutical compositions comprising compounds of claim 1, for the same reasons. 12 Appeal2017-005634 Application 14/113,017 Claims 14 and 15 Claim 14 recites a compound of general formula (5): in which R1, R3, R4, and R5 are as defined in claim 1. (Appeal Br. 32-33 (Claims App.).) Claim 14 differs from the reference claims of the '766 patent, such as '766 patent claim 4, at least because the reference claims have the following base structure where R2 is an aryl or a heteroaryl group, while instant claim 14 requires a hydrogen atom to be at the "R2" position. Claim 15 recites a compound of general formula (7): (7) in which R2, R3, R4, and R5 are as defined in claim 1, and R1a is an aryl group to which an -NH2 substituent is bound. (Appeal Br. 33 (Claims App.).) In addition to the differences noted above with respect to instant claim 1 and the reference claims, regarding the R2 group, claim 15 also differs from the reference claims of the '766 patent because R1a in claim 15 13 Appeal2017-005634 Application 14/113,017 is an aryl group having an -NH2 substituent, whereas - NH2 is only one of a large number of optional substituents for the aryl group of R1 in '766 patent claims 1-3,7 which corresponds to R1a in instant claim 15. The Examiner provides no separate discussion as to why claims 14 and 15 are not patentably distinct from the reference claims in light of these differences, and claims 14 and 15 also do not appear to read on the elected species. Nevertheless, Appellants state that claims 14 and 15 read on the elected species in their response to the restriction requirement. (Restriction Response 2.) Thus, we limit our consideration of the merits to the elected species and reverse the Examiner's rejection of claims 14 and 15 over claims 1-5 of the '766 patent on the ground of nonstatutory obviousness- type double patenting, for the same reasons discussed above with respect to claim 1. II. Issue The Examiner rejects claims 1-5, 9, 10, 14, and 15 for nonstatutory obviousness-type double patenting over claims 1-5 of the '980 patent. The Examiner states that, [ a ]lthough the claims [ on appeal and claims 1-5 of the '980 patent] are not identical, they are not patentably distinct from each other because the ['980] patent claims the elected species and other overlapping species of the instant claims. Specifically, the ['980] patent claims the 7 Claims 1-3 of the '766 patent recites that R1 represents an aryl group substituted with one or more substituents selected from a certain list of enumerated groups and optionally substituted with one or more substituents selected from another list of enumerated groups, where the optional substituent includes NR7R8, and both R7 and R8 may be a hydrogen atom. (See, e.g., '766 patent 52:19, 36-37, 48; 53:56; 54:1.) 14 Appeal2017-005634 Application 14/113,017 elected species, wherein: RI is N(R7)C(=O)-R6, R7 is hydrogen, wherein R6 is (CH2)q-aryl substituted with a halo (i.e., fluorine); and R2 is aryl substituted with R8- S02 and R8-0, wherein R8 is C 1-C6 alkyl. As such, the claims of the ['980] patent include compounds that are instantly claimed. (Ans. 6 ( emphasis omitted).) Appellants contend that, "while certain parts of the respective compounds [ of the claims on appeal and the '980 patent claims] may overlap, as a whole they do not." (Appeal Br. 7.) In particular, Appellants contend that, while "the claims of both the '980 Patent and the present application are directed to compounds of formula (I)," (I) "there is no overlap in the definition of R5" because "R5 of the '980 Patent is a C1-C6-alkyl group [while] R5 of the present application is hydrogen." (Id.) Appellants likewise contend that there is no evidence on the record suggesting the specific selections and modifications to the compounds of the '980 patent to arrive at the claimed compounds. 8 (Id. at 8-9.) In response to Appellants' arguments, the Examiner acknowledged "[a] single difference ... wherein RS is a hydrogen in the instant claims 8 It is unclear whether Appellants contend that the claims exhibit unexpected results as compared to the compounds of the reference claims in the '980 patent. We need not decide this issue, however, as we find that the Examiner has not established a prima facie case that the instant claims are obvious variants of the reference claims of the '980 patent. 15 Appeal2017-005634 Application 14/113,017 and is a methyl in the '980 patent." (Ans. 11.) However, the Examiner asserts that "[i]t is well established that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or nonobvious results." (Id.) We limit our consideration on the merits to the elected species. See Ex parte Ohsaka, 2 U.S.P.Q.2d 1460, 1461 (B.P.A.I. 1987). The issue with respect to this rejection is whether a preponderance of the evidence of record supports the Examiner's conclusion that the elected species, N-[4-(2-{[2- ethoxy-4-(methylsulfonyl)phenyl ]amino} [ 1, 2,4 ]triazolo [ 1, 5-a ]pyridin-6- yl)phenyl]-2-( 4-fluorophenyl)acetamide, is an obvious variant of the compounds claimed in claims 1-5 of the '980 patent. Analysis Once again, we begin with construing the reference claims and the claims on appeal and determining the differences between the two. Claim 4 of the '980 patent appears to have the greatest overlap with instant claim 1; 9 thus we use that claim as the reference claim in our analysis. Claim 4 of the '980 patent is similar to claim 4 of the '766 patent, discussed above, except that in '980 patent R2 represents an aryl group whereas in the '766 patent R2 is described explicitly as a phenyl or a pyridinyl group, and, as 9 We note that claim 5 of the '980 patent recites a specific compound, N-[4- {2-[ (2-cyanophenyl)amino ]-5-methyl[ 1,2,4 ]triazolo[ 1,5-a Jpyridin-6- yl} phenyl)-2-phenylacetamide. ('980 patent, 58:25-27; see also id. at 34:45---60.) The Examiner has not relied on this specifically recited compound to assert that the claims on appeal are not patentably distinct from the reference claims. We decline to determine in the first instance whether the claims on appeal may be rejected on double patenting ground on the basis that they are not patentably distinct from the specifically recited compound in claim 5. 16 Appeal2017-005634 Application 14/113,017 acknowledged by the Examiner, R5 represents a C1-C6-alkyl group rather than a hydrogen atom. Thus, the reference claim in the '980 patent differs from instant claim 1 in essentially the same manner discussed above with respect to the double patenting rejection over the '766 patent, except that R5 represents a C1-C6-alkyl group rather than a hydrogen atom as required by claim 1. Because the Examiner makes essentially the same prima facie case here as he did with respect to the '766 patent, we reverse the rejection for the same reasons. SUMMARY For the reasons above, we reverse the Examiner's decision rejecting claims 1-5, 9, 10, 14, and 15. REVERSED 17